MWE Investments, LLC v. Champion Power Equipment, Inc.

1. Case Identification

• Case #: IPR2025-01423
• Patent #: 11,530,654
• Filed: September 3, 2025
• Petitioner(s): MWE Investments, LLC, Harbor Freight Tools USA, Inc., and Generac Power Systems, Inc.
• Patent Owner(s): Champion Power Equipment, Inc.
• Challenged Claims: 1-11

2. Patent Overview

• Title: Off-Board Fuel Regulator for Generator Engine
• Brief Description: The ’654 patent describes a dual-fuel generator and fuel delivery system. The system features an off-board fuel regulator with primary and secondary pressure regulators for gaseous fuel, and a mechanical fuel valve coupled to a "fuel lockout apparatus" to selectively control fuel flow and prevent the simultaneous use of both liquid and gaseous fuels.

3. Grounds for Unpatentability

Ground 1: Obviousness over DuroMax, Parlatore, and Elsdon - Claims 1 and 3-11 are obvious over DuroMax, Parlatore, and Elsdon.

• Prior Art Relied Upon: DuroMax (an operator's manual for a dual-fuel generator), Parlatore (Application # 2011/0100335), and Elsdon (Patent 5,718,265).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination teaches all limitations of the challenged claims. DuroMax disclosed a commercially available dual-fuel (gasoline/LPG) generator with a mechanical fuel shutoff valve. Parlatore taught an off-board fuel delivery system for engines, including generators, with primary and secondary pressure regulators connected to a pressurized fuel source like an LPG tank. Elsdon disclosed a hinged cap assembly for covering a fluid conduit coupler to physically prevent a connection.
  • Motivation to Combine: A POSITA would combine Parlatore’s off-board regulator system with the DuroMax generator to improve safety and serviceability, benefits explicitly taught by Parlatore. A POSITA would also be motivated to implement Elsdon’s physical cap assembly by linking it to DuroMax’s mechanical fuel valve. This would solve the known problem of rich air-fuel ratios and unstable operation resulting from the simultaneous use of both fuel sources, a problem acknowledged in the ’654 patent’s own background.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because Parlatore expressly suggested its system for use with generators, and Elsdon’s cap was described as a simple "retrofit" for existing equipment. Combining these known elements for their intended purposes was argued to be predictable.

Ground 2: Obviousness over Hallberg and Parlatore - Claims 1, 3-7, and 9-11 are obvious over Hallberg and Parlatore.

• Prior Art Relied Upon: Hallberg (Patent 4,492,207) and Parlatore (Application # 2011/0100335).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as demonstrating obviousness even under the Patent Owner’s alleged claim construction. Hallberg disclosed a complete dual-fuel system for an engine, including a mechanical fluid dual valve actuated by a control cable that simultaneously selects one fuel (gasoline or propane) while locking out the other. Parlatore, as in Ground 1, taught the off-board, two-stage regulator system. Petitioner asserted that Hallberg’s control cable and dual valve assembly constitute a "fuel lockout apparatus" coupled to a mechanical fuel valve.
  • Motivation to Combine: A POSITA would be motivated to combine Parlatore's off-board fuel regulator system with Hallberg's dual-fuel engine to gain the known benefits of using a larger, off-board LPG tank, which enhances safety and provides longer run times. The combination was presented as a straightforward application of Parlatore's universal regulator system to Hallberg's established dual-fuel engine design.
  • Expectation of Success: Success would be expected because dual-fuel engines were well-known, and combining a standard off-board regulator with such an engine involved using each component for its intended function with predictable results.

Ground 3: Anticipation by Tri-Fuel Video - Claims 10 and 11 are anticipated by the Tri-Fuel Video.

• Prior Art Relied Upon: Tri-Fuel Video (a 2011 YouTube video demonstrating a generator modification).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued the Tri-Fuel Video disclosed every element of claims 10 and 11. The video showed a generator modified to run on gaseous fuel from a separate propane tank. It explicitly described and showed a fuel regulator system located "off-board" the generator, which comprised two regulators working in stages (a first stage reducing pressure to 0.5 psi and a second stage further reducing it). The video showed this dual-stage regulator system mounted directly to the pressurized fuel source (the propane tank), while also showing that the generator itself was free of any pressure regulators. This arrangement was argued to meet all limitations of independent claim 10 and dependent claim 11.
• Additional Grounds: Petitioner asserted additional challenges, including that claims 10 and 11 are anticipated by Chaudhari (Indian Patent No. 207333), and that claim 2 is obvious over the combinations of Ground 1 or Ground 2 in view of the LP-Gas Handbook.

4. Key Claim Construction Positions

• "fuel lockout apparatus": Petitioner contended this term is governed by 35 U.S.C. §112(f) as a means-plus-function term because the claim recited a function without sufficient corresponding structure. The petition identified the sole corresponding structure disclosed in the specification as the flange (items 58, 61 in the patent figures) that is rigidly coupled to the rotating fuel valve handle. This construction is critical because it limits the scope of the claim to the specific flange structure and its equivalents.
• "prevents...coupling" and "permits...to couple": Petitioner argued these phrases require preventing or permitting the physical attachment of a fuel source line, not merely preventing or permitting fuel flow. This position was based on the specification’s sole embodiment, which described the flange acting as a physical barrier over the fuel inlet, and on statements made by the Examiner during prosecution of the parent ’780 patent distinguishing prior art that only stopped fluid flow but did not prevent physical connection.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-11 of the ’654 patent as unpatentable.